DETAILED ACTION
This Office action is responsive to the following communication received:
09/19/2025 – IDS;
11/25/2025 – Amendment; and
12/12/2025 – IDS.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claim 5 has been cancelled, as directed.
Claims 1-4 and 6-20 remain pending.
Claims 17-20 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/13/2025.
Response to Arguments
In the arguments received 11/25/2025, and with respect to independent claim 1, the applicant contends that none of the cited references appear to disclose or suggest vortex generators positioned on an aft half of the crown or sole, and alternatingly extending toe-ward toward the toe and heel-ward toward the heel. The applicant continues by arguing that none of the ridges in Henrikson (US{N 11,904,217), which have been identified as vortex generators identified by the Office, disclose frontmost portions of the plurality of vortex generators positioned along an arc corresponding to an outer perimeter of the golf club head.
Insofar as independent claim 10, the applicant contends that none of the cited references shows or suggests an aft recess being at least partly defined by a pair of opposite sides, in the aft half of the crown, and a recessed floor extending between the pair of opposite sides, with the applicant asserting that one of ordinary skill in the art would not have been motivated to combine the teachings of Johnson (US PUBS 2020/0139208) and Suketo (JP-2018166916-A) to arrive at the claimed invention.
IN RESPONSE:
Applicant’s arguments, see scanned page 2, line 9 through scanned page 3, line 22, filed with the Remarks of 11/25/2025, with respect to the rejection of claims 1-4 and 6-9 have been fully considered and are persuasive. However, the amendments to the claims raise new concerns of indefiniteness under 35 U.S.C. §112(b). See the rejections hereinbelow.
With respect to the arguments directed against the rejection of claims 10-16, it is noted that the outstanding rejection provides a clear motivational statement for combining the teachings of Johnson with Suketo, namely that it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Suketo by providing the vortex generators atop an inlay that is subsequently attached to the crown portion, with the inlay being manufactured from a different material than a material of the remainder of the crown portion, the motivation being to configure and simplify the manufacturing process so that considerations of weight distribution for the club head may be taken into account when constructing the crown while enabling the vortex generators to be provided along areas determined to provide maximum benefit to the aerodynamics of the club head (e.g., construction of the vortex generators as part of an inlay would have enabled the inlay to be placed at a specific location of the crown, skirt or sole portion(s), as deemed necessary for proper airflow). With respect to the fact that amended claim 10 now requires the particulars of “the aft recess being at least partly defined by a pair of opposite sides, in the aft half of the crown, and a recessed floor extending between the pair of opposite sides”, the applicant’s attention is directed to the further teaching in Henrikson et al (USPN 11,904,217), which teaches that a crown insert may rest within a recessed portion of the crown and atop a surface of a floor of the recessed portion (i.e., see floor 3421 in FIG. 80, with the recess formed by sidewalls 3423; and col. 52, lines 42-58 in Henrikson). A further explanation is provided in the rejection set forth hereinbelow.
Despite the amendments presented to claim 17, claims 17-20 remain withdrawn from further consideration as being directed to a nonelected invention, in view of the fact that claims 10-16 remain rejected under 35 U.S.C. §103, using various combinations of prior art of record. Thus, no further comments or actions regarding claims 17-20 are currently being presented.
Specification - Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
As to claim 1, line 23, the specification lacks proper antecedent basis for the “flat rear edge” (emphasis added), which is shown in at least FIGS. 17 and 19, as discussed by the applicant’s attorney in the remarks received 11/25/2025 (i.e., see scanned page 2, lines 29-32.
As to claim 4, lines 4 and 5, the specification lacks proper antecedent basis for “an absolute value” (emphasis added). Note that paragraphs [00129] – [00131] of the specification, and with reference to FIGS. 16A and 16B, discuss extension angles “C” and “D”, with only negative and positive values being mentioned.
FOLLOWING IS AN ACTION ON THE MERITS:
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 1, lines 10-11, “an arc corresponding to an outer perimeter of the golf club head” is vague. Which outer perimeter is being described? How is the arc corresponding to an outer perimeter? Does the arc correspond to a shape and orientation of an outer perimeter at a rearmost portion of the golf club head? Note that, when viewed from a top view, an arc may be realized along an outer, toe-ward side of the club head, along an outer, heel-ward side of the club head, and along an outer, rearmost portion of the club head. Also, when viewed from a heel-side, an arc may be realized in a front-to-rear direction across an outer perimeter of the crown portion. Similarly, when viewed from a toe-side, an arc may be realized in a front-to-rear direction across the outer perimeter of the crown portion. Also, is the “along an extension direction partly rearward from the striking face” recited in lines 16-17 referring to the same “along an extension direction partly rearward from the striking face” recited in lines 14-15? How exactly is the “extension direction” to be interpreted? Does the extension direction toe-ward reflect an extension away from a particular axis or plane? Similarly, does the extension direction heel-ward reflect an extension away from a particular axis or plane?
As to claims 2-3, these claims share the indefiniteness of claim 1.
As to claim 4, lines 4-5, the “absolute value” is not exactly understood. It would seem that the first and second extension angles are described as representing positive and negative values. See paragraphs [00129] – [00131] of the specification. Further clarification is needed in the claim.
As to claims 6-9, these claims share the indefiniteness of claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of 'the inferences and creative steps,' or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention. This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.
I. EXEMPLARY RATIONALES
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10-12 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2018166916-A to Suketo (hereinafter referred to as “Suketo”) in view of US PUBS 2020/0139208 to Johnson et al (hereinafter referred to as “Johnson”) and further in view of USPN 11,904,217 to Henrikson et al (hereinafter referred to as “Henrikson”).
As to claims 10 and 15, Suketo lacks “the aft recess being at least partly defined by a pair of opposite sides, in the aft half of the crown, and a recessed floor extending between the pair of opposite sides” and “an aft vortex generator inlay” (claim 10), and further lacks the material requirements and differences between the crown and the inlay (claim 15).
Johnson is cited to show that it is old in the art to integrally form a crown portion of a club head with vortex generators thereon, or to provide a separate crown insert that includes a plurality of vortex generators, which is subsequently attached to the remaining crown portion (i.e., see FIG. 8 along with paragraphs [0172] and [0320] – [0321] in Johnson). In Johnson, the vortex generators (336) may be placed on a crown insert (335), as described in paragraph [0172]. Moreover, the crown insert may account for as little as at least 30%, or at least 80% of the crown surface (i.e., see paragraphs [0169]). The crown insert may be considered to serve as the claimed “vortex generator inlay” that is fitted within an aft recess (i.e., a recessed ledge or seat 338; FIG. 12A; paragraph [0170]). Here, the aft recess in Johnson includes a depth (i.e., a recessed ledge or seat 338; FIG. 12A; paragraph [0170]), upon which the inlay or crown insert is fitted. The crown insert is of the same thickness as the recessed ledge in order for the upper surface of the crown insert to sit flush with the remainder of the crown portion of the club head.
While it may be argued that Johnson does not explicitly show a “recessed floor extending between the pair of opposite sides”, with the opposite sides defining the aft recess, Henrikson is cited to show that a crown insert may rest within a recessed portion of the crown and atop a surface of a floor of the recessed portion (i.e., see floor 3421 in FIG. 80, with the recess formed by sidewalls 3423; and col. 52, lines 42-58 in Henrikson). In view of the further teaching in Henrikson, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the crown portion in Johnson, which in turn is used to modify the club head in Suketo, by including a recessed floor extending between the pair of opposite sides, with the opposite sides defining the recess, with there being a reasonable expectation of success that providing a floor associated with the aft recess, as shown in Henrikson, as opposed to a perimeter ledge or frame as disclosed in Johnson, would have provided another convenient way of maintaining the crown insert (i.e., the “vortex generator inlay”) in a fixed position. The modification of Johnson in view of Henrikson would have involved combining prior art elements according to known methods to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Moreover, Johnson teaches that the crown insert may be formed of a composite material while the remainder of the club head including the remaining crown portion may comprise metal material (i.e., see paragraphs [0166] and [0170] in Johnson). In view of the further teachings in Johnson, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Suketo by providing the vortex generators atop an inlay that is subsequently attached to the crown portion, as explained hereinabove, with the inlay being manufactured from a different material than a material of the remainder of the crown portion, the motivation being to configure and simplify the manufacturing process so that considerations of weight distribution for the club head may be taken into account when constructing the crown while enabling the vortex generators to be provided along areas determined to provide maximum benefit to the aerodynamics of the club head (e.g., construction of the vortex generators as part of an inlay would have enabled the inlay to be placed at a specific location of the crown, skirt or sole portion(s), as deemed necessary for proper airflow).
As for the remaining limitations in claim 10, Suketo shows a metal-wood type golf club head (i.e., translated page 2, paragraphs 5 and 6 under “Description of Embodiments”) having improved aerodynamic properties, the golf club head comprising: a striking face (2); a sole (5); a crown (3); and a plurality of vortex generators (30) positioned in at least an aft half of the crown, as shown in FIG. 4(a), as well as a plurality of vortex generators (30, 30b, 30c), as shown in FIG. 5(a). Also, see translated page 4, 34-42; and translated page 5, lines 1-30.
As to claim 12, Suketo shows that the plurality of vortex generators are positioned along an arc defined by an offset distance from an outer perimeter of the crown, as shown in FIG. 4(a). However, Suketo does not explicitly disclose “the offset distance being between 0.2 inch and 1.2 inches” (conversion to 5.08 mm to 30.48 mm). It is initially noted that Suketo stipulates that the vortex generators (30) in the FIG. 4(a) example are to be close to the outline or outer periphery of the club head (i.e., see translation, page 4, lines 38-45). In the FIG. 5(a) embodiment, Suketo similarly depicts the turbulators as following an arc-shaped path that substantially conforms to the contour of the back portion (3) of the club head. Next, Suketo discloses that distance R in FIG. 2(a) approximates the diameter of a golf ball, namely about 22 mm (i.e., see translation, page 3, lines 37-39). Even though the drawings in Suketo are not revealed as being drawn to scale, if one examines what is shown in FIG. 2(a) along with what is shown in FIGS. 4(a) and 5(a) and considers the distance R, one can clearly extrapolate that the arc-shaped vortex generators are offset by a distance of at least 0.2 inch and within 1.2 inches (conversion to 5.08 mm to 30.48 mm) of the rearmost portion of the crown portion of the club head. Since Suketo does explain the relative positioning and placement of the vortex generators (i.e., the turbulators 30) and since Suketo discloses that the turbulators may be positioned substantially along the contour of the back portion, it is clear that the drawings, in combination with the specification, identifies an offset generally within the claimed range. Note MPEP 2125 stating: “the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977)”. Even if one were to argue that Suketo does not explicitly disclose the claimed offset distance, it is clear that Suketo discloses that the relative positioning and placement of the turbulators in close proximity to the rear portion of the crown directly assists in altering and generating a desirable airflow (i.e., page 1 and the translated Abstract; see translation page 4, line 15, along with lines 25-27 and lines 43-45; and translation page 5, lines 27-30 as well as translation page 6, lines 14-22). One of ordinary skill in the art and before the effective filing date of the claimed invention would have found it obvious to have modified the club head in Suketo by positioning the vortex generators along an arc that is offset between 0.2 inch and 1.2 inches from the outer perimeter of the crown in provide for an airflow that encourages a steadier movement of air across the crown by reducing air resistance. Note MPEP 2144.05 stating: "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
As to claim 16, Suketo lacks “a forward recess” along with “a forward inlay that includes an alignment indicator” as part of the crown portion. Henrikson disclose a recess in a crown portion that may be fitted with an inlay or insert designed for providing an alignment feature. In Henrikson, the turbulators positioned atop the crown adjacent the forward portion of the crown may serve as alignment indicators (i.e., col. 11, lines 40-44). Moreover, the turbulators In Henrikson may be placed upon an inlay structure which in turn may be fitted into a recess within the crown portion. The scenario in Henrikson enables the alignment indicators to be constructed either integrally with the remainder of the crown or, with the inclusion of a recess in the crown, constructed separately and subsequently attached to the crown. The alignment indicators would clearly have assisted a golfer in proper setup of the club head in an address position. The separate inlay would have enabled different materials to be used apart from the material of the main club head. In view of the teaching in Henrikson along with the above reasoning, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have modified the club head in Suketo by providing the crown, at the forward portion thereof, with a recess that is structured to receive an inlay that includes an alignment indicator, the motivation being to provide the golfer with additional structure that assists in properly aligning the club head with an intended target.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2018166916-A to Suketo (hereinafter referred to as “Suketo”) in view of US PUBS 2020/0139208 to Johnson et al (hereinafter referred to as “Johnson”) and further in view of both USPN 11,904,217 to Henrikson et al (hereinafter referred to as “Henrikson”) and US PUBS 2011/0028238 to Boyd et al (hereinafter referred to as “Boyd”).
As to claims 13-14, Suketo discloses that the vortex generators protrude from an upper crown surface. Likewise, Johnson notes that the vortex generators may protrude from an upper surface of the crown insert (i.e., see paragraph [0172]). In addition, Johnson notes that the crown insert which may be attached to the crown portion using bolts, rivets or other joining methods (i.e., se paragraph [0169]). The crown insert in Johnson, as previously modified by Henrikson, serves as the claimed “vortex generator inlay”. Though it may be argued that Suketo, as modified by Johnson and Henrikson, does not provide more specifics as to “at least one attachment extension protruding from a lower surface of the base”, as required by claim 13, or that “the aft recess includes at least one receiving hole through which the at least one attachment extension is inserted”, as required by claim 14, it would have been obvious to one of ordinary skill in the art and before the effective filing date of the claimed invention to have further modified the club head in Johnson to include the features noted herein in order to securely attach the crown insert to the remaining crown portion in view of the teaching in Boyd, which provides an expanded explanation that various parts of the club head, such as a crown insert, may be attached to other portions of the club head using any one or more of a variety of mechanical connectors (e.g., nuts, bolts, or other fasteners) and that the club head may include appropriate grooves, slots, flanges, apertures or other openings to accept the mechanical fasteners (i.e., see paragraph [0028] in Boyd). In this way, the club head of Suketo, as modified by Johnson (as further modified by Henrikson and Boyd) would have included structure to securely attach the crown insert to the remaining crown portion.
Allowable Subject Matter
Claims 1-4 and 6-9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Applicant’s arguments, see scanned page 2, line 9 through scanned page 3, line 22, filed with the Remarks of 11/25/2025, with respect to the rejection of claims 1-4 and 6-9 have been fully considered and are persuasive.
Further References of Interest
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See FIGS. 2, 4-15 and 18 in Cleghorn; and
See Abstract and FIGS. 4A, 4B and 5 in JP 2016107022 A.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Specifically, the amendment to independent claim 10 to now require “the aft recess being at least partly defined by a pair of opposite sides, in the aft half of the crown, and a recessed floor extending between the pair of opposite sides” necessitated the new grounds of rejection.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEBASTIANO PASSANITI whose telephone number is (571)272-4413. The examiner can normally be reached 9:00AM-5:00PM Mon-Fri.
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SEBASTIANO PASSANITI
Primary Examiner
Art Unit 3711
/SEBASTIANO PASSANITI/Primary Examiner, Art Unit 3711